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Intel v McAfee: Should you use your name as your business name?

06-07-2017

News that John McAfee has settled legal action in the US with technology giant Intel over the commercial use of his name once again raises the question over whether brands should ever be built around a founder's name. McAfee founded the computer anti-virus software in 1987 and sold his company, including the brand name to Intel, in 2010. This latest dispute relates to McAfee's decision to change the name of his current company (MGT Capital Investment) to John McAfee Global Technologies, which Intel felt amounted to trademark infringement.

McAfee certainly isn't the first to seek to build a brand around his name, but using your own name as your business name does carry a certain number of risks. What should you do, therefore, if you have chosen to name your business after yourself?

There are many examples of 'famous' names that have fallen foul of trademark law. Perhaps the most famous of them all, the Elvis Presley trademark has been the subject of multiple court cases over who owns or has the right to use the name. In the UK, it was held that the name had been used for so many merchandising products by so many companies that it lacked the ability to distinguish the goods of one company from those of another company.

The fashion (e.g. Louis Vuitton), leisure (e.g. Hilton hotels), and food and drink (e.g. Kellogg’s) sectors provide many examples of successful brands that have been built on the founder’s name. However, there are plenty of cautionary tales, too, from family in-fighting, such as with Gucci and Asprey, to loss of name after business sale, as both Elizabeth Emmanuel and Karen Millen (and now McAfee) has found to their frustration.

Much will also depend on the relative distinctiveness of a name or surname for use in identifying a particular owner’s products or services; in other words, the more unusual your name, the more likely it may be deemed to be distinctive. (John Smith’s Brewery providing here the exception that proves the rule, but then the brand name dates back to the 1800s.) Similarly, the more common the name, the more likely it is that someone else will have got there first (see, for example, the recent spat between Kylie Jenner and Kylie Minogue).

Even if the name is available, it is not guaranteed that the trademark office will accept the trademark application –your name will need to fulfil the same criteria as any other intended trademark to be successful (see: is your trademark capable of registration?). Here, you may be able to improve your odds by combining your name with a distinctive logo for example.

Top tips

  • You should always search to check your name is available for use and registration before you start a business under the name.
  • If you want to be famous, register your name (if possible) before you become famous to stop others jumping on the merchandising bandwagon.
  • Even if you don’t want to be famous, if your name is your business name and if the name is capable of being registered, you should do so. It's an asset of the business and a registration could increase the value of the company to a potential buyer.
  • If you sell your business, make sure your name registration is not sold with it – if the name is the essential value of the business, you can always license it to the new owner.

Refusals after the fact
If you have been refused registration of your name as a trademark, either for the reason that it was not considered distinctive or because it was already taken, you are not prevented from using your name for ordinary business purposes. However, it is advisable to consult with a trademark attorney to ensure that your use of the mark is not infringing the existing registered right. 

Your attorney will also be able to advise you on the steps that you can take to obtain protection for your business name, including any adjustments you may need to make in order to register it as a trademark. Contact us for further information or support.